Federal Circuit Orders Sua Sponte Oral Argument in WesternGeco

In May I published a post titled Is WesternGeco Moot?, in which I wrote:

This morning the Federal Circuit published its opinion in WesternGeco LLC v. ION Geophysical Corp., affirming the PTAB's determination that certain claims of three WesternGeco patents are invalid.  On Twitter, Janice Mueller asks "Does this moot the Supreme Court’s pending consideration of offshore LP damages if the WG patents are gone??"  I think the answer is no, because if I understand the facts correctly there were four patents in suit in the infringement proceeding, all of which were found to be valid and infringed; and according to today's Federal Circuit's opinion (p.3 n.2) one of these four, U.S. Patent. No. 6,691,038, was "not at issue here," that is, in the appeal from the PTAB.  Also, although I have not immersed myself in the record of this case, I believe that one of the infringed claims of one of the instituted patents also was not an issue in the PTAB appeal (claim 23 of the '520 Patent).  So as long as some portion of the damages award could have been based on the infringement of these noninstituted claims, I think the Supreme Court still has jurisdiction (though I hasten to note that I am not an expert on federal jurisdiction).  

The Supreme Court issued its decision in the case in June, stating that 

Under the Patent Act, a company can be liable for patent infringement if it ships components of a patented invention overseas to be assembled there. See 35 U.S.C. § 271(f)(2). A patent owner who proves infringement under this provision is entitled to recover damages. § 284.The question in this case is whether these statutes allow the patent owner to recover for lost foreign profits. We hold that they do.

See my analysis here.

Last week,  the Federal Circuit issued the following order sua sponte:

Oral argument for these appeals is scheduled for November 16, 2018, at 10:00 a.m. in Courtroom 201. The parties shall notify the court via ECF by November 2, 2018, of the names of counsel who will present oral argument. At oral argument, counsel should be prepared to address the following questions:

(1) In view of this court’s affirmance of the invalidation of ’967 Claim 15, ’607 Claim 15, ’520 Claims 18 and 19 in inter partes review, WesternGeco LLC v. ION Geophysical Corp., 889 F.3d 1308 (Fed. Cir. 2018), is Claim 23 of U.S. Patent No. 7,293,520 the only claim that could support the lost profits award?

(2) In the event that all lost profits could not be awarded because ION and WesternGeco do not compete in the same market, would it be appropriate to apportion any award of lost profits attributable to the sale and use of the device of ’520 Claim 23 and profits attributable to other, nonpatented, aspects of survey services?

(Hat tip to Dmitri Karshtedt for passing this along.)  Here is a link to the '520 Patent, and here is a link to '038.  Claim 18 of '520, from which Claim 23 depends, reads: 

An apparatus comprising:
(a) an array of streamers each having a plurality of streamer positioning devices there along;
(b) a control system configured to use a control mode selected from a feather angle mode, a turn control mode, a streamer separation mode, and two or more of these modes.

Claim 23 reads:

The apparatus of claim 18 wherein the towing comprises ending one pass, turning a towing vessel having the streamers attached thereto while throwing out the streamers before beginning another pass, with the control mode in the turn control mode during the turning and throwing out.

Here is claim 14 of '038, which is the one found valid and infringed:

A seismic streamer array tracking and positioning system comprising:
a towing vessel for towing a seismic array;
a seismic streamer array comprising a plurality of seismic streamers;
an active streamer positioning device (ASPD) attached to each seismic streamer for positioning each seismic streamer;
a master controller for issuing vertical and horizontal positioning commands to each ASPD for maintaining a specified array geometry;
an environmental sensor for sensing environmental factors which influence the towed path of the towed array;
a tracking system for tracking the streamer horizontal and vertical positions versus time during a seismic data acquisition run;
an array geometry tracking system for tracking the array geometry versus time during a seismic data acquisition run, wherein the master controller compares the vertical and horizontal positions of the streamers versus time and the array geometry versus time to desired streamer positions and array geometry versus time and issues positioning commands to the ASPDs to maintain the desired streamer positions and array geometry versus time.

I'd have to delve more deeply into the facts and the record to hazard a guess as to why the court doesn't mention '038, or to predict how the Federal Circuit will rule.  Any ideas, readers?